Michelle Lee to Stay on as USPTO Director

By Gene Quinn
January 19, 2017

Michelle Lee, Under Secretary of Commerce and Director of the USPTO


Michelle Lee, Under Secretary of Commerce and Director of the USPTO

Reports surfaced yesterday that USPTO Director Michelle Lee was either refusing to resign, as is customary at the end of a Presidential term, or that she was attempting to revoke her letter of resignation. This almost too bizarre to believe story was not confirmed or denied by the Patent Office, and career Patent Office Officials were unusually tight-lipped about what was happening on the 10th floor of the Madison Building.

This morning fresh, credible rumors are surfacing that suggest later today an announcement will be made that Michelle Lee has been asked to stay on as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

Lee being tasked with continuing to run the Patent Office for the Trump Administration would begin to make sense of the reports that she revoked her letter of resignation. Lee was widely reported to have submitted her letter of resignation to President Obama to take effect at noon on January 20, 2017. If Lee revoked her resignation prior to it being accepted by President Obama then she would simply remain in place as Director of the USPTO and a new Senate confirmation process would seem unnecessary.

News that President Trump would want Director Lee to continue to run the Patent Office is catching much of the patent community flat footed. Much speculation in recent weeks surrounded Phil Johnson and Randall Rader, but the dream of a Johnson or Rader Administration at the USPTO seems all but gone now. As of 12:53pm The Hill has confirmed through their sources on Capitol Hill that Lee will retain the top spot at the Patent and Trademark Office.

Some are speculating that a meeting between Eric Schmidt, the executive chairman of Google’s parent company Alphabet, and Jared Kushner, the influential son-in-law of President-Elect Trump, may be the reason why Lee will be asked to remain as head of the Patent Office. While nothing seems impossible with respect to this rather improbable story, that speculation strikes me as misplaced. Yes, Lee is a former Google executive, but Lee and Google parted ways years ago. Lee did not leave Google to join government like so many other Google executives. There may have only been a very brief hiatus between when she left Google and became Director of the then non-existent San Jose Office of the USPTO, but the Lee-Google separation was a mutual separation.

Likely more accurate speculation points to the fact that both Michelle Lee and Trump tech advisor Peter Thiel were classmates at Stanford Law School, both graduating in the class of 1992, a fact first appreciated by Scott Graham of Law.com. Thiel, the billionaire venture capitalist and PayPal co-founder, was Trump’s only true supporter from the tech industry. See The patent views of Peter Thiel. Thiel vouching for Lee and recommending that she remain as head of the Patent Office seems far more plausible than Eric Schmidt, who strongly supported both President Obama and Secretary Clinton, having significant sway with respect to a Trump appointment.

Having said this, there is no denying the fact that Lee’s positions on patents in her time as Director of the USPTO have certainly seemed to be very closely aligned with Google’s positions. The way she talks about patents has rubbed many, if not most, innovators outside Silicon Valley the wrong way. If Thiel was pushing Lee behind closed doors that would certainly explain why the rest of the tech community did not offer an alternative candidate to the pro-patent candidates that were so commonly believed to be on the Trump short list.

“The fact that no mainstream stakeholders spoke up to support Lee, and that she is staying, could mean only one thing — Big Tech got their way,” said one source. “They were the only way she would have survived, so she must have given them some assurances.”

And that is how the Patent Office will begin under the Trump Administration, with Michelle Lee remaining as Director. A cloud of suspicion will hang over the Office as a great many innovators wonder exactly what has happened to America’s patent policy and innovation agency.

UPDATE 1 Thursday, January 19, 2017 at 12:57pm ET to adding the third paragraph regarding Senate confirmation.

UPDATE 2 Thursday, January 19, 2017 at 3:13pm ET to add mention of Scott Graham noting the connection between Lee and Thiel several weeks ago, and confirmation from The Hill. 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 63 Comments comments.

  1. curoius January 19, 2017 11:05 am

    Is this a permanent thing, or would she stay on for a year or two while other candidates are vetted/considered?

  2. IPdude January 19, 2017 11:29 am

    Game over. The patent system will not be restored to pro-inventor in our lifetime.

  3. Curious January 19, 2017 11:48 am

    So much for making innovation part of making America great again. The Chinese and high-tech billionaire CEOs are giddy right now.

  4. angry dude January 19, 2017 11:53 am

    So PTAB will continue to invalidate granted US Patents using the SAME prior art considered during PTO examination in the first place ???

    I’m done with US patent system

  5. Curious January 19, 2017 11:58 am

    I’m done with US patent system
    Apparently the Trump Administration thinks the same way.

  6. Charles Barton January 19, 2017 12:01 pm

    So much for draining the swamp.

    I put the following comment on Patentlyo.

    Michelle Lee did not come clean on SAWS and similar unlawful quality assurance programs, in which a good number of USPTO employees seem to have committed criminal acts in criminal conspiracy. The more data I analyze, the more evidence I find of corruption at the agency including coaxing of expert testimony, which I believe is equivalent to subornation of perjury.

    Now Lee appears reluctant to leave office. Could there be issues that a new director might open up to the public and that Lee needs to keep secret to keep out of jail?

    I have to admit that I have yet to find clear and convincing evidence that Lee was involved in criminal corruption at the USPTO, but the data (especially event timing) certainly encourages suspicion, and the record of her boss (Penny Pritzker) does not inspire any confidence.

    Pritzker dodged the bullet on the mortgage meltdown by claiming she did not know and did not understand what was happening at the corrupt bank of which she was a director. Obama’s record of failing to prosecute financial fraud does not inspire confidence in an absence of executive branch corruption especially when the preceding GWB, Clinton, and GHWB administrations put a lot of financial fraudsters in jail.

  7. angry dude January 19, 2017 12:24 pm

    Wilbur Ross and Michelle Lee under him ?

    Me thinks we might be looking at the meltdown of trump administration before it even takes office 🙂

  8. JPM January 19, 2017 12:32 pm

    If this is true it is very bad news for inventors who have infringed patents.

    Let’s hope that these rumors are not true and that Michelle Lee is leaving and that a fresh person without conflict will be the new PTO director. I cannot see how the Trump administration cannot connect the dots between Google and Michelle Lee. There is an obvious conflict of interest there.

  9. Paul Morinville January 19, 2017 1:22 pm

    Drain the swamp? LMFAO. What a joke. There is no bigger crony in government than Google. Fill the swamp.

  10. David January 19, 2017 1:27 pm

    She had a 7 figure salary waiting for her the moment she exited the USPTO.

    Between money and power, she chose power.

    Absolute power corrupts absolutely, or something.

    She sees where the PTAB is headed. You can’t fault for wanting to remain in control. The ability to control the validity of issued patents makes Michelle a very important, very powerful person.

  11. Night Writer January 19, 2017 1:53 pm

    This is beyond depressing. Why not nominate Dyk for the SCOTUS and call it a day.

    You know, all those people at the table with Trump, Google, etc., want Lee to stay. The rate of innovation is a public good. @10David: you are assuming that the money she makes when she gets out won’t be increased for her extra years of service to Google at the PTO. Google is going to slide her some massive Google bucks when she leaves.

  12. IPdude January 19, 2017 1:54 pm

    David @10,

    Lee is still getting her seven figures. It will be through blind trusts and other nefarious instruments. Like Google, she has both money and power.

    The Trump administration realized they need Google and caved. We were all optimistic but probably knew this was coming.

    This is the result of Citizens United. SCOTUS killed all hopes for small/mid size businesses. This is what you get now – a world run by a search engine.

  13. Night Writer January 19, 2017 1:58 pm

    Also, I hate to say it, but I did say that I highly doubted that Trump would get patents and put into place a good person for patents. I said Trump meeting with Google was a very bad sign. I’ll bet the political play is that Google says we need to keep patents weak and continue to weaken them so we can compete with foreign corporations. I’d bet that is the angle along with promises of massive Google bucks if they get to keep their monopoly.

  14. angry dude January 19, 2017 2:05 pm

    IPdude @ 12

    “…blind trusts and other nefarious instruments”

    There is no need for illegal instruments

    The standard way of legally making seven (or more) figures while in government office is to write a book… not even write it – just announce that you are going to write it and collect nice advance check from a publisher (that’s what obamma did btw)
    I even have a title for Lee’s upcoming book:

    “The audacity of stealing patents from American inventors while being USPTO director”

  15. Mag Z January 19, 2017 2:16 pm

    What a shame this is happening. However, I personally believe that she will be forced out by the Trump administration. If she doesn’t respectfully move on, her history will get scrutinized and she might end up as an inmate in federal prison.

    I will write a letter to the Trump administration expressing my deep concern regarding the future of American innovation given Lee’s unwise leadership and the incumbent zombie capitalist agenda.

  16. EG January 19, 2017 2:22 pm

    Hey Gene,

    If true, not good, not good at all.

  17. Paul Morinville January 19, 2017 2:42 pm

    Does she need to be reconfirmed by the Senate? If so this is the place to put the message out that Michelle Lee is the swamp.

  18. angry dude January 19, 2017 3:08 pm

    Wilbur Ross (Lee’s direct boss) “Zero Tolerance of IP Theft”

    Lee: “Any granted US patent can be readily (on google’s request) invalidated by USPTO on the SAME prior art already considered by the same USPTO during patent prosecution and allowance”

    Is this implosion of Trump administration just one day before inauguration or what ???????????????????????????????????????????????????????????

  19. Gene Quinn January 19, 2017 3:10 pm

    Paul-

    I think the answer to your question is NO. The news I started hearing yesterday was that she was either refusing to resign or was trying to revoke her resignation letter. By revoking her resignation before it was accepted she never resigned and she has already been confirmed. I believe Trump will just inherit Lee, an already confirmed Director of the PTO and there will be no need for her to go through the confirmation process again.

    -Gene

  20. Edward Heller January 19, 2017 3:19 pm

    Gene, I have heard that she is prepared to switch sides and back the idea that patents are property, and perhaps support the agenda items I posted on your forum several weeks ago. If this is in fact true, Lee would be an asset.

    On Google, they seem quite adaptable politically. They need access to Trump. Thus I think they will adopt a more pro-patent stance, and a more pro-American stance.

    But this may all be wishful thinking.

  21. Curious January 19, 2017 3:20 pm

    BTW — from here on out, can we agree to blame Trump (as opposed to Obama) for Lee? At least Obama had the excuse he didn’t know what he was getting whereas Trump is going in eyes wide open.

  22. Curious January 19, 2017 3:21 pm

    But this may all be wishful thinking.
    This :point_up:

  23. angry dude January 19, 2017 3:29 pm

    Might it have something to do with Trump’s plans to repeal obamacare and install trumpcare instead ?
    The major portion of any a***care are domestic prices on commonly prescribed drugs – thus big pharma patents.
    Revoking or weakening big pharma patents will instantly lower drug prices (with the obvious downside that there will be no new drug developed for lack of incentive)

  24. Paul Morinville January 19, 2017 3:35 pm

    Edward Heller @21. A skunk can’t change its stink. It doesn’t matter if she changes sides and it won’t matter how strongly she comes out on our side. The stink will linger for years and will waft into any patent related discussion in Congress.

    Her positions are all well known and anything she says to change that will be an uphill battle. In the back of the tiny mind of Issa an his ilk of bought off Republicans, there will always be the old Michelle Lee and her quotes to regurgitate to support their arguments weakening patents.

    What is needed is a clean break to someone else to show there is a clearly a different direction and the past with Michelle Lee was a definite mistake. Then the conversation can be had without a skunk in the room.

    This is an incredibly bad decision.

  25. Night Writer January 19, 2017 3:45 pm

    Unbelievable. Google’s influence has no bounds. Lunch with the son-in-law and they get their way. I suppose they will continue to select the Fed. Cir. judges too.

    Google bucks… Well, no worries, the Google ventures have been so successful that we can all count on Google to provide us with all the innovation the US needs.

  26. Invention Rights January 19, 2017 3:49 pm

    Bummer. Lee’s examiners will continue to churn out “quality” patents to be shot down by her smarter-than-everyone-else APJ’s. The patent bubble will continue to expand unless/until applicants figure out it is a sham.

  27. IPdude January 19, 2017 4:02 pm

    Edward @21

    I appreciate your optimism and your work in the patent ecosystem. But this is natural selection at work. It is the alpha, Google, going for the kill. They have no reason, at this point, to play nice (they never have). They will do what they are positioned to do – kill software patents so as not to have anyone challenge their dominance in the space. I say this as an inventor who has been infringed by a number of big corporations with impunity. In this country there are two beneficiaries: the super wealthy and the super poor. The middle pays the price.

  28. Inventor (soon to be Fomer Inventor) January 19, 2017 4:36 pm

    The problem:

    The Enactment of the America Invents Act Brings a Variety of Post Grant Options to U.S. Patent Law
    October 2011

    http://www.oblon.com/publications/the-enactment-of-the-america-invents-act-brings-a-variety-of-post-grant-options-to-u-s-patent-law/

    “…
    Inter Partes Patent Reexamination (existing proceeding) — An inter partes reexamination permits a third party to request the reexamination of an issued patent from a post November 29, 1999 application. The request can be filed at any time during the enforceability of the patent. Such a request can only be based on patents and printed publications, and prior to the AIA was only granted if the submitted prior art raised a substantially new question (“SNQ”) of patentability.

    The AIA replaces the SNQ standard with a new standard, namely a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. This change is effective immediately.

    The results:

    Post-Grant Review Is Becoming Increasingly Popular
    Law360, New York (June 1, 2016, 10:32 AM ET) —

    http://www.haynesboone.com/~/media/files/attorney%20publications/2016/postgrant%20review%20is%20becoming%20increasingly%20popular.ashx

    “…
    Over the last three years, the PTAB has instituted PGRs approximately 83 percent of the time, significantly higher than the IPR institution rate of approximately 60 percent over the same period.[36] When obviousness was challenged, it was granted 90 percent of the time. Challenges under §§ 101 or 112 were granted 50 percent of the time. Though anticipation is the second most common challenge in PGR petitions it is the least successful ground, resulting in institution one-third of the time it is challenged.
    …”

  29. ac January 19, 2017 4:39 pm

    Trump’s administration has serious issues with cabinet level picks as well as mounds and mounds of lower layer positions that are unfilled. He is certainly glad to have someone knowledgeable as the head of the PTO – even if the majority here don’t like what she is doing, at least she is fully aware of how she is shafting the system for Google’s sake. Note that Trump states that he is against China and IP theft, which may eventually put him into conflict with Lee. Eventually being the operative word – if ever.

  30. Edward Heller January 19, 2017 5:59 pm

    ac, now what if Lee has actually switched sides to respecting patents as property and is now desiring to give credit to inventing in the form a strong grace period that removes prior art for prior invention in the US? That is probably the only way to get a pro-patent Director into the position given the opposition of big IT and other anti-patent businesses that seem also to control the likes of the IPO and AIPLA.

  31. IPdude January 19, 2017 6:22 pm

    Edward @28

    Why would Lee (with the support of Issa) campaign to stay on, and forgo making millions in the private sector, if she was not going to continue doing what her boss has been telling her to do? Why would she switch sides? Makes no sense. Do you have any proof this is the case? What if unicorns are real? Get real. We lost. Again.

  32. Letters.from.the.Silicon.Trenches January 19, 2017 6:25 pm

    Gene, thanks for keeping the patent community informed. This is deeply troubling news. As is being reported, the “legal” bribery of lobbying seems to be winning over the American Inventor.

    I am re-posting my commentary as did not post, perhaps due the previous supporting links that have been removed. I just wanted to register views held my some in our neck of the woods.

    Apparently, The Leviathan that is Google CONTINUES to stretch its nefarious tentacles to infiltrate the halls of Congress and the presidency, as well as the hallowed patent office of the United States of America. During the last presidency, Google had averaged one White House visit per week. The Leviathan is “Goliath” to the independent inventor’s “David.” Political hack Darrell Issa, who ironically has benefited financially from strong patent rights as an inventor (from the sale of his car alarm business and intellectual property), has done the bidding of Google in exchange for his “thirty pieces of silver.” Google/Alphabet was the top 1 or 2 campaign donors for Issa. His anti-Constitutional efforts have paid off for Google in spades with passage of AIA. Much like the Romans who had sowed salt into the soil of Carthage in 149 BC to ensure crops would not grow to feed the vanquished, Google, Issa, and others, like Rep. Goodlatte and other “Big Software” cronies, have sowed the patent landscape with toxic AIA laws and regulations to ensure the seeds of innovation bear little fruit for independent inventors and those who otherwise might threatened oligopolistic efforts. It is the departure of their top entrepreneurial employees, and their subsequent patenting, that these companies fear more than trolls. In a clear example, “Big Software” companies in the Silicon Trenches, including the aforementioned Leviathan, were fined over $300M in 2014 for colluding with each other to NOT hire each other’s employees. Those same “Big Software” companies undoubtedly welcomed AIA to diminish the patent protections of potential ex-employees who aspire to boot-strap their start-up ventures, thereby reducing valuation for prospective investors.

    So, while Google loosed attack dog Issa on the patent laws of the United States, Google, too, loosed attack dog Direktor Michelle Lee on the very patenting process itself. In her own words, Lee is a proponent of “a strong patent system.” But she rarely, if ever, suggests that the patent system should secure strong patent property rights for all inventors. Lee’s programs to build “a strong system” antithetically diminish patent rights. One such program was the now defunct “Glossary Pilot Program,” responsive to Executive Fiat in June 2013. The program enabled a patent application to be made “special” if the applicant: (1.) stepped on a chair, (2.) placed a noose around the necks of the claim terms, and (3.) kicked the chair out from underneath. In many ways, Direktor Lee has succeeded. She has built a “strong patent system”—one that is strong enough to grind independent and small inventors into dust.

    It is time that the Honorable Michelle Lee departs to “spend more time with family.” And the Leviathan must be exorcised.

    As Google mutates into Alphabet and financial discipline sets in, many of its “moonshot” projects are ending up like exploding SpaceX Falcon 9 rockets. Search for CBSNEWS news article “Google’s “moonshot” projects are crashing to earth,” dated 1/17/17. So with Google’s “moonshots” failing to reach the moon (has any?), unlike Apollo 11, one wonders the fate of patents and patent applications directed to the failed moonshots. Will Google dedicate those rights to the public? Or, will Google transform its non-product producing business units into NPEs? Or will “Big Alphabet” sell/transfer its IP indirectly to NPEs? Shouldn’t Google’s obligations to its shareholders demand it?

    They will reap what they’ve sowed… Karma is a…

  33. Edward Heller January 19, 2017 7:11 pm

    IPdude, with the support of Issa? Issa is a confirmed enemy of a strong patent system, unless he too has seen the light.

    My only “proof” are people who talk to the Trump transition team, pure second or third hand hearsay. These people, who apparently know of my positions on the AIA and IPRs, may like what I have had to say on this topic because I have been strong on American R&D jobs as well as on the topic that patents are constitutionally protected property. If they like what I have had to say, they could not accept Lee unless she did an about-face.

  34. Edward Heller January 19, 2017 7:17 pm

    Paul, what would it take from Lee to get you to accept her? Some public statement?

    The AIA was and is deadly to the American patent system as we all know. Changes have to be made. I made a set of proposals here when Gene asked for a set. Have you looked at them? What if she agreed to move forward with implementing them in Congress?

  35. IPdude January 19, 2017 7:29 pm

    Edward @34.

    His (Issa) support of Lee staying on as director, when they were both a CES.

  36. Paul Morinville January 19, 2017 7:33 pm

    Edward, I hold nothing personal against Michelle Lee. My bet is she surprised by the damage she caused. The problem is that a skunk doesn’t know it stinks. I really think she will never understand why she caused the damage. I also think her very presence in the job will give encouragement to those who wish to steal others property.

    She just needs to go on to her civilian career and leave the government.

  37. Edward Heller January 19, 2017 7:42 pm

    IPdude, got it. But Issa may have said that assuming the ML had not switched sides. Issa definitely favored all aspects of the AIA, which is an unmitigated disaster for America in any number of ways. He seems too wedded to the vision of the backers of the AIA to listen to any alternative views.

    But the Trump transition team may want to again tilt the patent system into favoring invention in the US and to allowing the courts the final say on patent validity. Lee has to be on board with this or else. But this is directly contrary to Issa’s preference for anti-Americanism and for burdening patents with expensive and unfair IPRs and the like.

  38. IPdude January 19, 2017 8:10 pm

    Edward, I certainly hope you are right.

  39. JPM January 19, 2017 8:37 pm

    Edward,

    I highly doubt that Lee and Google are going to become pro-inventor / pro-patent owner, it would be foolish for all of us to think so. Why should myself and other inventors believe that is even a remote possibility?

    The swamp needs to be drained, Lee and Google are the definition of the swamp at the PTO. The swap at the PTO has not been drained if Google’s former attorney, Michelle Lee is still running the PTO.

    Unfortunately, it looks like Trump may not even know what is going on with patents today and how the AIA (America Invents Act) created the very unfair post grant IPR proceeding process that kills patents at ~ 80% rate.

    I can’t see how Trump would keep Lee on if he knew how weak patent rights are today. It seems all inventors have no voice here and are being overlooked yet again.

  40. Not the first attempt January 19, 2017 9:13 pm

    In January 2001, the Director tried sticking around and was repeatedly told by OMB “no, you are done at noon.” The message did not stick until the morning of the 20th.

  41. angry dude January 19, 2017 9:22 pm

    What a childish talk here about someone switching sides…
    and what for ?
    grow up, dudes
    But I tend to think that patents are the last thing on trump’s mind right now… far behind russian hackers, putin, liberal media, mexican wall, iranian deal, legal conflict of interests, nice office for Ivanka in WH etc etc etc
    When he gets to patents, IF he ever gets to them before next election or impeachment then we’ll see
    anyway, congrats on new old PTO director
    as they say: same sh1t, different day
    amen brothers

  42. David January 19, 2017 9:34 pm

    Trump made a deal – Michelle keeps her post; in return, she helps him deal with pharma costs.

  43. Anon January 19, 2017 9:38 pm

    The “Google’s Revolving Door (US)” website says it all. For those that attended the USC Entertainment and Business Law Conference in October, the ire of songwriters dominated the afternoon session on music licensing, as another Google plant effectuated corporate strategy in the DOJ BMI/ASCAP consent decrees. MS paid the price before the DOJ/FTC and while doing so Google built an even bigger monopoly. One examiner said McRO is bad law, “just look at the panel”. As a former litigator, I cringe. One creature of the swamp will remain, to train the others – domage.

  44. Inventor January 19, 2017 10:18 pm

    Edward Heller,

    Curious, what were the fixes you proposed for the AIA (Anti-Innovation Act)?

    I hope you are correct about ML and hope she is capable of switching sides that readily….but I’ll see it when I believe it.

  45. Mark Summerfield January 20, 2017 7:00 am

    “Yeaaah!
    Meet the new boss
    Same as the old boss”
    — The Who, Won’t Get Fooled Again

  46. Night Writer January 20, 2017 7:06 am

    @41: angry dude. I agree it is ridiculous to speak of her changing “sides.”

    @42 David: that I would not doubt.

    @43: Inventor: Ed the Ned is a mole. He pushes some parts of patent law to make it stronger while pushing other parts to completely undermine and destroy patent law. Beware Ed the Ned.

  47. Inventor January 20, 2017 7:24 am

    Night Writer,
    Thanks for the heads-up.
    That’s why I wanted to review his Edward Heller’s of proposals to fix AIA.
    SCOTUS ruled that PTAB was ok because the USPTO had the authority to make its own rules; and of course Congress passed the Anti-Innovation Act (AIA); but isn’t SCOTUS supposed to review the Constitutionality of laws and regulations? Didn’t they pass the buck when unanimously ok’ing the PTAB in 2016 (because the USPTO has the right to make its own rules)? Shouldn’t they have said something about due process. Inventors spend a lot of money on legal fees and spend a lot of time prosecuting patents, studying prior art that the PTO Examiner comes up with and modifying their claims to get around any Examiner objections, seeking venture funding, developing products, asserting against infringers, etc. ….only years later to see the AIA upend their investment by saying that the USPTO can now invalidate your claims using a new, different, more general interpretation of prior art. Keep in mind that it is difficult to re-imagine the world as it was when many inventions took place. One needs to forget all that has transpired over the years. What is obvious now may not have been all that obvious prior to the inventive leap. How can that stand in the US I grew up in?

  48. Anon January 20, 2017 7:30 am

    This is the result of Citizens United. SCOTUS killed all hopes for small/mid size businesses. This is what you get now – a world run by a search engine.

    Cynically, this makes perfect sense (re)read 1984 – Google is the tool for the Ministry of Truth (it says so on the internet…)

  49. Night Writer January 20, 2017 9:26 am

    @46 Inventor: I agree. Ed the Ned’s main attack is with 101. He says that all computer programs are ineligible unless they are burned into a ROM.

    But, I agree IPRs are ridiculous. Think about the fact that they put Lee in charge when she cannot even understand a filewrapper. She has no clue what a quality patent is or how to improve quality. Her role is to burn the system down.

    You know for attorneys it is very discouraging as well. Who wants to spend their time doing something only to have the PTO flip-flop on everything and say all your work was for naught. Very discouraging.

  50. Scumpo LaFlunge January 20, 2017 10:29 am

    I am not sure I disagree, but since more patents are being issued every year than ever before, is it correct to say she is anti-patent?

    Yes, the killing fields of PTAP are clearly at work; is the conclusion that only valuable patents get the PTAP evisceration, and the rest can linger in obscurity?

  51. Gene Quinn January 20, 2017 12:36 pm

    Scumpo-

    Michelle Lee is very much anti-patent. The fact that more patents are being issued misses the point at least a little. The patents that are necessary for America’s high tech economy are not being issued. Software patent allowance rates are in many areas of the USPTO under 10%, in some areas under 5% and in some Art Units at low as 1%. Lee has done nothing to rectify the bogus rejections or games examiners play with applicants. Why? If she were pro patent and pro innovator she would have done something to fix what by any reasonable, objective standard is a travesty. In the biotech industry, which I admittedly do not know as well from a technical standpoint, I understand that wide swaths of innovators are similarly unable to protect their inventions and that the USPTO interpretations and guidelines go well beyond what is requires even by SCOTUS Myriad and Mayo decisions. The USPTO is a mess and real innovators are stopped and increasingly moving to trade secrets, and increasingly moving to seek protection outside the US. As that trend continues businesses will move outside the US.

    -Gene

  52. Edward Heller January 20, 2017 12:48 pm

    My proposal:

    Any reform ideas should start with the observation that the purpose for the US patent system is to advance American innovation and American manufacturing. Initially, Congress limited patents to American citizens, which is consistent with the constitutional purpose.

    Thus the reforms need to be framed in the need to advance US R&D and US manufacturing. The playing field should not be level, but should tilt.

    1. We need to restore a solid 1-year grace period for US inventors because the grace period was always intended to benefit US inventors. Thus, if the invention is made in the US, the applicant gets a 1-year grace period against all prior art. There should be no need to prove priority. Where there are rival inventors seeking to patent the same invention, the first to file should prevail.

    2. We need to clarify that US R&D is an American industry. That industry should be protected from imports in the ITC so that the US patent holder may extract a substantial royalty from infringers. As well, eBay should be overturned to the extent that US manufacturing is protected by a patent system, whether the asserting party is the manufacturer or not. The patent owner needs to protect his licensees with injunctions.

    3. We need to reduce costs of the US patent system to the US independent inventor, the startup, and the university. Until they reach a size where they can afford post-grant procedures of any kind, their consent must be required before they are forced into a PGR or reexamination. The exception should be is where the patent owner actually files suit.

    4. We need to limit public use prior art to US only.

    5. We need to eliminate patents and published application being prior art as of their filing dates, or limit that effect to applications filed in the United States that are based on US inventions — which should be indicated on the face of the patent or application.

    6. We need to consider restoring the guarantee of 17 years of exclusivity. All prosecution beyond 3 years should be added to term, subtracting out delays by the applicant. In addition, the period any patent is in involuntary reexamination or PGR should be restored.

    Patents are not practically enforceable while undergoing reexamination, etc.

    7. We need to revise 251 so that changes to claims in reissues and reexaminations etc. do not result in lost damages. The test should allow for past damages where a claim is narrowed and where the claim was infringed both before and after the narrowing. This is how it works outside the US. A major reason reexaminations for infringers are so popular is this “feature.

    8. BRI should not be used in reexaminations or other PGRs.

    9. The standard of proof for the examiner for the petitioner in reexaminations and PGRs with respect to existing claims should be clear and convincing. This mainly means that reasonable doubts must be resolved in favor of the patent owner.

    10. Only a court of law should order an IPR. That same court should provide de novo review of the decision of the PTAB. Special court rules need to be added so that the only issues the court will consider are related to institution. Venue should be proper only where the patent owner resides. The requirement that a court be involves assures that the petitioner has Article III standing.

    11. In IPRs, narrowing amendments should be routinely allowed unless the petitioner proves them unpatentable.

  53. Night Writer January 20, 2017 12:49 pm

    @51: Scumpo–the statistics that are presented to you are also part of the unethical anti-patent movement. The numbers are not normalized for foreign filings and economic growth.

    I think that the number of patent applications has fallen by about 66% since 1980 in the U.S. when the numbers are normalized for foreign filings and per billion dollars of inflation adjusted GDP for high-tech industries.

  54. angry dude January 20, 2017 1:08 pm

    Scumpo LaFlunge @51

    You gotta be an idiot to file for patent protection if that “protection” can be revoked at any time on anyone’s (e.g. google’s) request WITHOUT any new prior art presented in addition to what is already cited against your patent during patent prosecution process.

    This is like selling pre-paid phone cards and then cancelling them at will without returning unused balance to purchasers – try it and see how long you will stay in that kind of business and out of jail.

    What PTAB is doing now is borderline criminal robbery and extortion

    Thanks but no thanks

    “Fool me once – shame on you, fool me twice – shame on me”

  55. Night Writer January 20, 2017 1:38 pm

    @54: Ed the Ned:

    #10 makes sense actually. That would be a good solution.

    But, then when you get to 101 your agenda falls apart and you start ranting about ROMs.

  56. angry dude January 20, 2017 1:46 pm

    Night Writer @56

    “But, then when you get to 101 your agenda falls apart and you start ranting about ROMs.”

    This is pointless discussion in this day and age

    For example, FPGA chips are clearly HARDWARE (no burning into any ROM), but they are reconfigurable on the fly via loading new configuration bitstream.

    If some people pretend not to understand the simple fact that “SOFTWARE = (silicon) HARDWARE” then they must have a hidden agenda …

  57. Scumpo LaFlunge January 20, 2017 1:50 pm

    So, did Google buy Scotus as well as Ms. Lee?

  58. angry dude January 20, 2017 2:01 pm

    Scumpo LaFlunge @58

    Doesn’t matter

    SCOTUS (as it is right now) should be banned from touching any subject science or tech-related – they just make complete fools out of themselves, the entire world is laughing

  59. Tom January 20, 2017 4:06 pm

    USPTO will not comment on question as to whether Michelle Lee is still Undersecretary of Commerce for Intellectual Property. Now why would they not want to comment. She either is or isn’t. So I suspect she is no longer there.

  60. Eric Berend January 21, 2017 7:26 pm

    The very fabric of the Republic is under threat. Sycophancy and nepotism are more important than the rule of law; as it was in the waning days of the Roman Empire; and the French Monarchy just prior to their Revolution. In this niche we inhabit, although such a specialized “single issue” politically; we yet see a microcosm of the arbitrary effects of unlawful power abuses overtaking much of American society and law practice and prosecution, today.

    Rather than repeat here my comments posted in the previous article on this news topic, I will cite those here, as comments #15 and #19; as I believe they are just as relevant here:

    http://www.ipwatchdog.com/2017/01/18/michelle-lee-refusing-leave-uspto/id=77287/

  61. Edward Heller January 22, 2017 8:02 am

    Eric, are you familiar with the waning days of the Roman Republic — where money and power controlled everything?

  62. Inventor January 22, 2017 12:44 pm

    Edward Heller,

    Thanks for listing your suggestions. They sound reasonagle. I like 10.

    What I think is missing is that if the PTO can be asked to invalidate a patent which they allowed, then they should use the same criteria used when allowing the patent. They should not be able to use an expanded interpretation of the same prior art in order to invalidate that patent. That’s double, triple, multiple jeopardy and that’s just plain wrong headed. Unless newly discovered prior art comes to light why review it at the PTO????

    Scumpo LaFlunge,
    Alphabet City (e.g. the Goog) did not buy SCOTUS. All they had to do is buy the White House to get the right justices appointed. Goog visited the White House an average of once a week. I guess having their head of IP running the PTO was not enough control???

    Angry Dude,
    I completely agree. Just try reading Clarence Thomas in the Alice Decision. These guys don’t have a chance of understanding software. Let me take a shot. I have a BSEE followed by an MSCS, and did work on a PhD in Systems Engineering. Many problems can be fixed in either hardware or software. Since it’s cheaper to fix them in software and we work with general purpose hardware, the preference is to make fixes in software…quicker, cheaper, one can do remote updates, easier to copy software, etc., etc. Now think about innovation. One can invent a new piece of hardware which will capture the invention or one can use general purpose hardware and software to describe the invention. Why insist on a new piece of hardware when software and general purpose hardware will do the job. CT’s Alice decision demonstrates a complete lack of understanding of the tradeoff between hardware and software….the same type of thinking that allowed Microsoft to make out like bandits with IBM allowing them to put the software they paid for on any future type of PC. Gates took advantage of this lack of understanding of software to become a multi billionaire. Now inventors are subject to this same limited understanding by the SCOTUS. I think you have the right idea Angry Dude.